July 2024
Series of Articles on Copyright Protection (4) ─ Remedies for Copyright Infringement (Mainland China)
July 2024
Di Wu and Teresa Huang
In recent years, the number of copyright infringement cases has been on the rise. Compared to ordinary civil infringement, copyright infringement is more convenient and cost-effective to implement. Moreover, the infringement behavior is difficult to verify, and the consequences of damage are easily expanded. Therefore, remedies for copyright infringement have become increasingly important. This article explores the characteristics of copyright infringement relief from the aspects of temporary safeguard measures for infringement relief, burden of proof in infringement litigation, etc. The specific content is as follows:
I. Temporary safeguard measures for infringement relief
Temporary safeguard measures refer to temporary actions taken before the court makes a judgment on a case to protect the rights and interests of the parties and prevent the expansion of losses. According to Article 56 of the Copyright Law, if a copyright owner or a rights holder related to copyright has evidence that others are committing or about to commit acts that infringe upon their rights or hinder their realization of their rights, and if not stopped in a timely manner, it will cause irreparable damage to their legitimate rights and interests, they may apply to the people's court for property preservation, order to take certain actions, or prohibit certain actions in accordance with the law before filing a lawsuit. Temporary safeguard measures mainly include pre-litigation orders to cease infringement, pre-litigation evidence preservation, and pre-litigation property preservation.
A pre-litigation order to stop infringement refers to the request made by the copyright owner or interested party to the court to issue an order requiring the accused infringer to refrain from certain actions before filing a lawsuit. This is done to promptly halt the infringing or potentially infringing behavior against the intellectual property rights of the right holder that is being or will be implemented. Interested parties may include the licensee of the copyright license agreement and the legitimate inheritor of the copyright property rights. The applicant must submit a written application, evidence of copyright ownership, evidence of factual infringement by the other party, and corresponding guarantees to the competent court when applying. According to the Civil Procedure Law, if a party is dissatisfied with the preservation ruling ordering the cessation of infringement-related acts before litigation, they may generally apply for reconsideration within ten days from the date of receiving the ruling. However, the execution of the ruling shall not be suspended during the reconsideration period.
Article 57 of the Copyright Law stipulates that to prevent infringement, in cases where evidence may be lost or difficult to obtain in the future, the copyright owner or rights holder related to the copyright may apply to the people's court for evidence preservation in accordance with the law before filing a lawsuit. Pre-litigation evidence preservation refers to situations where, due to urgent circumstances, evidence may be lost or difficult to obtain in the future. Interested parties may apply to the people's court where the evidence is located, the respondent's domicile, or the court with jurisdiction over the case for the preservation of evidence before filing a lawsuit or applying for arbitration. Firstly, the applicant needs to explain the reasons why the evidence may be lost or difficult to obtain, as well as the objective circumstances in which the parties and their legal representatives are unable to obtain the evidence. Secondly, it is necessary to provide guarantees to the court. Only when the court deems it necessary to take preservation measures after reviewing the evidence, will evidence preservation be carried out to ensure the normal progress of the case and litigation. Taking the case of Dehua County XX Ceramic Research Institute suing Fujian Province XX Ceramic Co., Ltd. ((2024) Min 0526 Zheng Bao No.5) as an example, in this case, the applicant, Dehua County XX Ceramic Research Institute, believed that the respondent, Fujian Province XX Ceramic Co., Ltd., infringed the copyright of its artwork Zongzi Ware. In order to prevent the suspected infringement evidence from being lost or difficult to obtain in the future, and because it could not be collected by the applicant for objective reasons, it submitted an application for pre-litigation evidence preservation to the People's Court of Dehua County, Fujian Province: 1. Conduct on-site investigation on the respondent's business site, and take samples, photos, videos, and clean up the finished products, semi-finished products, molds, packaging, etc. suspected of infringement. 2. Sampling and copying of promotional materials and sales documents related to infringing products at the respondent's business premises, including but not limited to sales contracts, inventory receipts, etc. The People's Court of Dehua County, Fujian Province, believed that the applicant's application complies with relevant legal provisions and can be granted permission. Therefore, methods such as taking photos, conducting inspections, copying, making records, and extracting samples were adopted to preserve the evidence related to this case at the location of the respondent, Fujian Province XX Ceramic Co., Ltd.
Article 103 of the Civil Procedure Law stipulates that in cases where one party's actions or other reasons may make it difficult to enforce a judgment or cause other damages to the party, the people's court may, upon the application of the other party, rule to preserve their property, order them to take certain actions, or prohibit them from taking certain actions. If the parties have not made an application, the people's court may also order the adoption of preservation measures when necessary. The property preservation measures in this article can also be applied to copyright disputes and are essentially the same as the provisions for ordering the cessation of infringement. The only difference is that for orders to cease infringement, when the respondent requests to lift the preservation measures, the court cannot lift them on its own unless the applicant agrees to do so. Property preservation can be terminated by the court without the consent of the applicant if the respondent provides counter-guarantee. In addition, according to Article 104 of the Civil Procedure Law, if the applicant fails to file a lawsuit or apply for arbitration within 30 days after the people's court takes preservation measures, the people's court shall lift the preservation.
II. The burden of proof in infringement litigation
In civil litigation, the principle of "whoever asserts, who provides evidence" generally applies. This principle also extends to copyright infringement disputes. However, due to the unique nature of copyright, there are special provisions in relevant laws and regulations regarding the burden of proof allocation.
Firstly, the plaintiff needs to prove that they are the rights holder or an interested party of the relevant work. Only by establishing themselves as the rights holder or an interested party can they have the legal standing to file a lawsuit with the court. Secondly, the plaintiff needs to demonstrate that the defendant has infringed upon their copyright. In practice, it is challenging for the rights holder to directly obtain evidence of copyright infringement by the infringer. Therefore, in copyright dispute cases, the court generally applies the principle of "contact + substantive similarity" to determine the infringement. Since it is very difficult for the rights holder to prove that the infringer has actually had contact with the work, the term refers to the reasonableness of the contact. The likelihood of reasonable contact can usually be ascertained through the following scenarios[1]: (1) Firstly, if the original work has been widely released such as through book publications, movie releases, or album launches, and the defendant fails to provide evidence to the contrary, the court will likely conclude that the defendant had contact with the original work. (2) The significant similarity between the original work and the infringing work can also indicate infringement. When there is a high degree of resemblance between the two works, it is improbable that the infringer independently created a similar work by chance. Unless both works have a common third-party source, the court can directly infer that the infringing work copied the original work. For example, in a copyright infringement dispute between Huang and an art theater in Nanning (case number: (2008) Gui Min San Zhong Zi No.15), although the plaintiffs’ "Ma Le Belt Visits the Sun" and the defendant's "Ma Le Visits the Sky" share many similarities, both works stem from folk legends of the Zhuang and Tong ethnic groups, leading the court to determine that there was no infringement. (3) If there is evidence showing that a third party closely associated with the infringer obtained the plaintiff's work, it can be presumed that the infringer accessed the original work through that third party.
The comparison of substantive similarity in copyright primarily pertains to the resemblance in the external presentation of infringing works and original works. However, determining substantial similarity is subjective and typically involves comparing the overall structure or outline of the work and its significant details to ascertain if the work in question exhibits substantial similarity.
In summary, although copyright infringement generally follows the provisions of ordinary civil infringement, such as measures for property and evidence preservation, and the principle of evidence allocation for whoever claims to provide evidence. However, due to the many differences between copyright and ordinary civil rights, it is also necessary to pay attention to the preservation of contact evidence in the process of safeguarding rights, in order to avoid infringement of rights without protection. Similarly, entities suspected of infringement also need to leverage the characteristics of copyright to protect their own interests, such as the existence of a common third-party source, and the exemption conditions for publishing infringing works without the knowledge of publishers and other entities.
[1] Refer to Professor Wang Qian's book "Copyright Law", Chapter 8: Copyright Infringement and Legal Remedies, Section 4: Evidence in Infringement Litigation.
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The contents of all newsletters of Shanghai Lee, Tsai & Partners (Content) available on the webpage belong to and remain with Shanghai Lee, Tsai & Partners. All rights are reserved by Shanghai Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Shanghai Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Shanghai Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors' opinions do not represent the position of Shanghai Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Shanghai Lee, Tsai & Partners.
Di Wu and Teresa Huang
In recent years, the number of copyright infringement cases has been on the rise. Compared to ordinary civil infringement, copyright infringement is more convenient and cost-effective to implement. Moreover, the infringement behavior is difficult to verify, and the consequences of damage are easily expanded. Therefore, remedies for copyright infringement have become increasingly important. This article explores the characteristics of copyright infringement relief from the aspects of temporary safeguard measures for infringement relief, burden of proof in infringement litigation, etc. The specific content is as follows:
I. Temporary safeguard measures for infringement relief
Temporary safeguard measures refer to temporary actions taken before the court makes a judgment on a case to protect the rights and interests of the parties and prevent the expansion of losses. According to Article 56 of the Copyright Law, if a copyright owner or a rights holder related to copyright has evidence that others are committing or about to commit acts that infringe upon their rights or hinder their realization of their rights, and if not stopped in a timely manner, it will cause irreparable damage to their legitimate rights and interests, they may apply to the people's court for property preservation, order to take certain actions, or prohibit certain actions in accordance with the law before filing a lawsuit. Temporary safeguard measures mainly include pre-litigation orders to cease infringement, pre-litigation evidence preservation, and pre-litigation property preservation.
A pre-litigation order to stop infringement refers to the request made by the copyright owner or interested party to the court to issue an order requiring the accused infringer to refrain from certain actions before filing a lawsuit. This is done to promptly halt the infringing or potentially infringing behavior against the intellectual property rights of the right holder that is being or will be implemented. Interested parties may include the licensee of the copyright license agreement and the legitimate inheritor of the copyright property rights. The applicant must submit a written application, evidence of copyright ownership, evidence of factual infringement by the other party, and corresponding guarantees to the competent court when applying. According to the Civil Procedure Law, if a party is dissatisfied with the preservation ruling ordering the cessation of infringement-related acts before litigation, they may generally apply for reconsideration within ten days from the date of receiving the ruling. However, the execution of the ruling shall not be suspended during the reconsideration period.
Article 57 of the Copyright Law stipulates that to prevent infringement, in cases where evidence may be lost or difficult to obtain in the future, the copyright owner or rights holder related to the copyright may apply to the people's court for evidence preservation in accordance with the law before filing a lawsuit. Pre-litigation evidence preservation refers to situations where, due to urgent circumstances, evidence may be lost or difficult to obtain in the future. Interested parties may apply to the people's court where the evidence is located, the respondent's domicile, or the court with jurisdiction over the case for the preservation of evidence before filing a lawsuit or applying for arbitration. Firstly, the applicant needs to explain the reasons why the evidence may be lost or difficult to obtain, as well as the objective circumstances in which the parties and their legal representatives are unable to obtain the evidence. Secondly, it is necessary to provide guarantees to the court. Only when the court deems it necessary to take preservation measures after reviewing the evidence, will evidence preservation be carried out to ensure the normal progress of the case and litigation. Taking the case of Dehua County XX Ceramic Research Institute suing Fujian Province XX Ceramic Co., Ltd. ((2024) Min 0526 Zheng Bao No.5) as an example, in this case, the applicant, Dehua County XX Ceramic Research Institute, believed that the respondent, Fujian Province XX Ceramic Co., Ltd., infringed the copyright of its artwork Zongzi Ware. In order to prevent the suspected infringement evidence from being lost or difficult to obtain in the future, and because it could not be collected by the applicant for objective reasons, it submitted an application for pre-litigation evidence preservation to the People's Court of Dehua County, Fujian Province: 1. Conduct on-site investigation on the respondent's business site, and take samples, photos, videos, and clean up the finished products, semi-finished products, molds, packaging, etc. suspected of infringement. 2. Sampling and copying of promotional materials and sales documents related to infringing products at the respondent's business premises, including but not limited to sales contracts, inventory receipts, etc. The People's Court of Dehua County, Fujian Province, believed that the applicant's application complies with relevant legal provisions and can be granted permission. Therefore, methods such as taking photos, conducting inspections, copying, making records, and extracting samples were adopted to preserve the evidence related to this case at the location of the respondent, Fujian Province XX Ceramic Co., Ltd.
Article 103 of the Civil Procedure Law stipulates that in cases where one party's actions or other reasons may make it difficult to enforce a judgment or cause other damages to the party, the people's court may, upon the application of the other party, rule to preserve their property, order them to take certain actions, or prohibit them from taking certain actions. If the parties have not made an application, the people's court may also order the adoption of preservation measures when necessary. The property preservation measures in this article can also be applied to copyright disputes and are essentially the same as the provisions for ordering the cessation of infringement. The only difference is that for orders to cease infringement, when the respondent requests to lift the preservation measures, the court cannot lift them on its own unless the applicant agrees to do so. Property preservation can be terminated by the court without the consent of the applicant if the respondent provides counter-guarantee. In addition, according to Article 104 of the Civil Procedure Law, if the applicant fails to file a lawsuit or apply for arbitration within 30 days after the people's court takes preservation measures, the people's court shall lift the preservation.
II. The burden of proof in infringement litigation
In civil litigation, the principle of "whoever asserts, who provides evidence" generally applies. This principle also extends to copyright infringement disputes. However, due to the unique nature of copyright, there are special provisions in relevant laws and regulations regarding the burden of proof allocation.
Firstly, the plaintiff needs to prove that they are the rights holder or an interested party of the relevant work. Only by establishing themselves as the rights holder or an interested party can they have the legal standing to file a lawsuit with the court. Secondly, the plaintiff needs to demonstrate that the defendant has infringed upon their copyright. In practice, it is challenging for the rights holder to directly obtain evidence of copyright infringement by the infringer. Therefore, in copyright dispute cases, the court generally applies the principle of "contact + substantive similarity" to determine the infringement. Since it is very difficult for the rights holder to prove that the infringer has actually had contact with the work, the term refers to the reasonableness of the contact. The likelihood of reasonable contact can usually be ascertained through the following scenarios[1]: (1) Firstly, if the original work has been widely released such as through book publications, movie releases, or album launches, and the defendant fails to provide evidence to the contrary, the court will likely conclude that the defendant had contact with the original work. (2) The significant similarity between the original work and the infringing work can also indicate infringement. When there is a high degree of resemblance between the two works, it is improbable that the infringer independently created a similar work by chance. Unless both works have a common third-party source, the court can directly infer that the infringing work copied the original work. For example, in a copyright infringement dispute between Huang and an art theater in Nanning (case number: (2008) Gui Min San Zhong Zi No.15), although the plaintiffs’ "Ma Le Belt Visits the Sun" and the defendant's "Ma Le Visits the Sky" share many similarities, both works stem from folk legends of the Zhuang and Tong ethnic groups, leading the court to determine that there was no infringement. (3) If there is evidence showing that a third party closely associated with the infringer obtained the plaintiff's work, it can be presumed that the infringer accessed the original work through that third party.
The comparison of substantive similarity in copyright primarily pertains to the resemblance in the external presentation of infringing works and original works. However, determining substantial similarity is subjective and typically involves comparing the overall structure or outline of the work and its significant details to ascertain if the work in question exhibits substantial similarity.
In summary, although copyright infringement generally follows the provisions of ordinary civil infringement, such as measures for property and evidence preservation, and the principle of evidence allocation for whoever claims to provide evidence. However, due to the many differences between copyright and ordinary civil rights, it is also necessary to pay attention to the preservation of contact evidence in the process of safeguarding rights, in order to avoid infringement of rights without protection. Similarly, entities suspected of infringement also need to leverage the characteristics of copyright to protect their own interests, such as the existence of a common third-party source, and the exemption conditions for publishing infringing works without the knowledge of publishers and other entities.
[1] Refer to Professor Wang Qian's book "Copyright Law", Chapter 8: Copyright Infringement and Legal Remedies, Section 4: Evidence in Infringement Litigation.
Related Articles
- Series of Articles on Copyright Protection (1) ─ Works Within the Meaning of the Copyright Law (Mainland China)
- Series of Articles on Copyright Protection (2) ─ Exploration of Standards for Determining Copyright Infringement (Mainland China)
- Series of Articles on Copyright Protection (3) ─ Overview of Neighboring Rights (Mainland China)
The contents of all newsletters of Shanghai Lee, Tsai & Partners (Content) available on the webpage belong to and remain with Shanghai Lee, Tsai & Partners. All rights are reserved by Shanghai Lee, Tsai & Partners, and the Content may not be reproduced, downloaded, disseminated, published, or transferred in any form or by any means, except with the prior permission of Shanghai Lee, Tsai & Partners.
The Content is for informational purposes only and is not offered as legal or professional advice on any particular issue or case. The Content may not reflect the most current legal and regulatory developments. Shanghai Lee, Tsai & Partners and the editors do not guarantee the accuracy of the Content and expressly disclaim any and all liability to any person in respect of the consequences of anything done or permitted to be done or omitted to be done wholly or partly in reliance upon the whole or any part of the Content. The contributing authors' opinions do not represent the position of Shanghai Lee, Tsai & Partners. If the reader has any suggestions or questions, please do not hesitate to contact Shanghai Lee, Tsai & Partners.
